2015-09-11

A Study on Geneva Act of the
International Registration of Industrial Designs

-
Hague System-

-Sang Yoon Kang

1.
Introduction

One commentator on the
recent Apple-Samsung intellectual property wars said, “After operating in the
intellectual property backwaters for years, design patents took center stage in
the epic battle.”[1]
According to a recent World Intellectual
Property Organization (“WIPO”) study, the filing of design patent applications is
more than doubled between 2004 and 2011.[2]
The number of litigations based on
design patents also keeps increasing.
Design patent is now getting more significant and growing in the IP
field.

U.S.
design patent applicants must file separate design applications in each country
where protection is sought, generally within a six-month priority window from
the filing date of an earliest priority-based application. Furthermore, requirements and procedures for
filing design patent applications are often different by countries.

On February 13, 2015, the
U.S. Patent and Trademark Office (“USPTO”) deposited with the WIPO an instrument
of ratification of the 1999 Geneva Act of the Hague Agreement Concerning the
International Registration of Industrial Designs (“Hague Agreement”). Subsequently, on April 2, 2015, the USPTO published
the final rules implementing the Hague Agreement.

As a result of the ratification
and implementation, the U.S. has become a participating member of the Hague
Agreement since May 13, 2015, and USPTO is currently accepting international design
patent applications under the Hague Agreement. That is, U.S. applicants are able to enjoy the
Hague System to protect their designs. Currently,
Hague System participants include 64 member countries, such as, the European
Union, Switzerland, Norway, South Korea, Japan and Singapore. With the United States’ participating, it is widely
expected that the network will grow more rapidly in the near future.

According to a unified
international design patent filing framework of the Hague System, a streamlined
filing procedure of design patent protection that may achieve filing efficiencies
and cost savings in procedures are available to U.S. applicants, a single
International Design Application (“IDA”) with the USPTO.

2. The Application Process in the Hague
System

A. The Hague System

The Hague Agreement governs
the international registration of industrial designs (design patents). The Agreement is firstly adopted in 1925, and it
effectively establishes an international system – the Hague System – that
allows industrial designs to be protected in multiple countries or regions with
minimal unified formalities. By using
the Hague System, an applicant can obtain the same result by means of a single
registration of a single IDA, written in one language, one payment of a single
set of fees, in one currency and with one office, International
Bureau (“IB”), currently WIPO.

In
terms of operation, the Hague System is like a hybrid of a Madrid Protocol,
which governs the international registration of trademarks/service marks,
and a Patent Cooperation Treaty (“PCT:), which governs the international registration
of utility
patent applications.[3]

B.
Procedures from the Perspective of a U.S. Applicant

To
apply for an International Registration under the Hague Agreement as
a U.S. applicant, the applicant must: (1) be a national of the United States;
(2) be domiciled in the United States; or (3) have a real and effective
industrial or commercial establishment in the United States.[4]

The
U.S. applicant is able to file a single IDA designating one or more countries
with the USPTO, which will automatically transmit the application to the IB. The IB sends the IDA to the designated
national or regional patent offices. In
this case, the USPTO serves as an office of indirect filing. The U.S. applicant is also able to pay
registration fees to the IB, for the designated countries.

Although
IDAs can also be directly submitted to the IB, submitting the IDA to the USPTO
as the office of indirect filing for designs created in the U.S. will cause a
foreign filing license to be generated before the IDA is forwarded to the IB.[5]This is similar to the current process for PCT
applications for U.S. inventions filed with the U.S. Receiving Office — nothing
gets forwarded to the IB until national security review procedures are
completed.[6]In addition, the U.S. applicant can pay for
all filing fees for filing in any country in U.S. dollars, whereas the IB only
accepts Swiss francs.[7]

The
applicant can include in the IDA everything required by the Hague Agreement, along
with any additional requirements which the designated countries have submitted
to the IB in the form of permitted exceptions to the default requirements of
the Hague Agreement. For example, as an
additional requirement, the USPTO requires that any IDA designating the U.S.
include a claim, an identification of the creators (inventors) and a
declaration of inventorship. The
international registration date for an IDA that complies with the filing date
requirements will be the filing date of the IDA. Meanwhile, although it is not stated in the
Hague Agreement, the applicant still must submit an Information Disclosure
Statement (IDS) with the IDA, likewise U.S. design patent application, if there
is any reference which is material to the patentability of the design contained
in the IDA.

It is important to understand
that the Hague System just simplifies the procedure related to filing design patent
applications, and that it does not change the substantive rules governing registration/examination
or enforcement of the resulting design rights.[8]
The IB reviews the IDA for formalities, and collects maintenance fees,
centrally payable at five-year intervals on patents deriving from the
international application. Once all of
the requirements for filing an IDA have been checked by the IB, the IDA is
published and transmitted to the countries designated by the applicant. In the IB, there is no central searching
authority, and substantive examination is left to national and regional
offices.[9]
Thus, the IDA is transmitted to the countries, and then registered or examined
according to each particular country’s substantive design patent laws. If the IDA does not comply with the
substantive design patent laws, the applicant will get substantive objections
or rejections from the regional offices which perform the substantive
examination. At this stage, the
applicant may need to engage local counsel to address the substantive
objections or rejections.

Therefore,
at least for the substantive examination in the national and regional offices,
unlike the Madrid Protocol, where U.S. applicants must have a U.S.
trademark/service mark application or registration in order to use the Madrid
Protocol internationally, the Hague International Design System will not
preempt the existing U.S. design patent system, but rather will operate in
parallel with the U.S. system.[10]

3. What We Should Know Regarding
the Hague System

A. U.S. design patent
term moved from 14 years to 15 years.

Along with the
implementation of the Hague Agreement, Congress lengthened the patent term of a
design patent to be 15 years from issue for all design patent applications filed
on or after May 13, 2015, regardless whether they are filed
through the Hague System or through the traditional U.S. design patent filing
system. This is an extension of one year
from the previous 14-year term. Design patent owners have
the Hague Agreement to appreciate for an additional one year of patent term.[11]

B. A single IDA can
contain up to 100 designs in a single application.

In
the Hague System, applicant can file up to 100 different designs (provided they
are in the same Locarno international classification, e.g., “equipment for
production, distribution or transformation of electricity” or “pharmaceutical
and cosmetic products, toilet articles and apparatus”) through a single IDA
filed electronically.[12] However, 37 C.F.R. § 1.142 requires that “if two or more
independent and distinct inventions are claimed in a single application, the
examiner will require the applicant to elect an invention to which the claims
will be restricted,” and this provision is applied to the IDA. The USPTO also has announced that it
will only permit one claim per design patent granted from an IDA (and thus one
set of drawings).[13] Thus, the IDA will be reviewed and when multiple designs deemed
to be “patentably distinct” are in one application, a restriction/election
requirement will be issued in the form of a refusal. An applicant who designates the United States
should consider a potential restriction/election requirement when he or she
prepares an IDA which contains a plurality of different designs.

Nevertheless, including
multiple designs in a single application is still a useful scheme to reduce
expenses for claiming multiple designs. Furthermore,
the USPTO does not provide a centralized guidance regarding requiring a
restriction; rather, the actual details of restriction requirement are instead
formulated by technology center and art unit.[14]
The lack of centralized guidance about
the proper application of the restriction requirement gives examiners in the
USPTO the discretion to decide whether the restriction requirement is necessary
or not. Therefore, it is difficult to expect how strictly the examiners will
apply the provision of 37 CFR 1.142 to the IDA including multiple designs. We will have to wait and see how the
restriction requirement practice is going to be applied to the IDA, for
deciding a coverage of designs to be included in a single IDA.

The above figure excerpted
from Hague Yearly Review 2015 shows the distribution of the number of designs
contained in a single registration. Along
with the above figure, the WIPO also announced that the number of single-design
and two-design registrations decreased slightly compared to 2013; in contrast,
the share of registrations containing three, four and five designs increased
slightly over the same period. Despite
the usefulness of the multiple designs-application, the number of IDAs
containing multiple designs is still smaller than the number of IDAs containing
a single design.[15]
One of the reasons is likely to be due
to the risk of the restriction requirement, as set forth above, and another
reason seems due to a lack of unified drawing standard, as set forth below.

C. Different Drawing
Requirements throughout the Countries Participating in Hague Agreement.

There
is no unified drawing standard in the Hague System, and different jurisdictions
have different drawing requirements.
Under the Hague Agreement Rule 9(3), parties which require certain specified
views can make a declaration specifying the specific views that are required
and the circumstances in which they are required. Below is the differences of drawing
requirements, between countries.

Countries

Participating
in

Hague
Agreement

Drawing
Requirements

European Union

Multiple designs are allowed to
be contained in a single registration, but each design is limited to only
seven “views” (or figures)

South Korea

Required Views for Typeface;
Required View for a Set of Articles; To avoid refusal, the appearance of each
product should be fully disclosed.

Japan

Six Required Views;
Orthographic (“straight on at eye level”) Projection

United States

A design must contain
“sufficient number of views to constitute a complete disclosure” (Did not
make a declaration under Rule 9(3)).

Furthermore,
there is other differences which include preferences regarding shading of line
drawings, the acceptance of photographs and computer-generated figures, and the
number of perspective views versus orthographic views that may be permitted.

Therefore,
to an applicant, if he or she did not regularly file for design rights in many
countries, it will likely be difficult to satisfy all of the different rules
and practices of participating countries by preparing a single set of figures
for an IDA. Furthermore, a U.S.
applicant, therefore, frequently must change those aspects of the drawings
before using them in various other countries.

Although
there are no known plans to change local rules and practices of any participating
countries at this time, if drawings standards are harmonized between the
participating countries, then having the Hague System in place would be more
desirable to applicants who wish to file for international rights.[16]

D.
Provisional rights to Damages before a Patent is Issued.

Unlike U.S. utility patent
applications, U.S. design patent applications are not subject to the
“publication” provisions that were placed in the U.S. patent law.[17]
The U.S. utility patent applications,
with a few exceptions, must all be published and made publicly available within
18 months after filing date of the U.S. utility patent application, whereas
U.S. design patent applications are not published until the U.S. design patent
issues on the U.S. design patent application.

On the contrary, an IDA in
the Hague System is published at six months from filing or from the filing of
any earlier priority application, or as soon as possible thereafter. Furthermore, in relation to this publication,
the IDA
has advantages for patentees in enforcing their rights. The Hague System provides provisional rights
to damages, which begin as of the publication date of the IDA, under 35 U.S.C.
§ 154(d).[18]
Section 154(d) provides the right to
obtain a reasonable royalty from a party that infringes the invention “as
claimed in the published patent application,” from the time the patent
application is published until the patent issues. These rights enable the applicant to collect
royalties for infringement when someone copies the design contained in the IDA after
publication of the IDA but before the design patent is issued, and the design patent
is later issued. Therefore, an early
provisional design patent protection is able to be attainable by the above IDA publication. In addition, because damages in design patent
infringement actions may be traced from the time of provisional protection, the
IDA in the Hague System is able to attain more higher damage awards for the
issued design patent, by calculating it from an earlier time point than in the
case of a traditional U.S. design patent system.

This effect would be very
valuable for applicants having designs that only have a very short-term product
life, for example, a toy, a cloth or a beverage can.[19]
Moreover, since the IDA is going to be
published, the designs contained in the IDA can operate as prior art
retroactive to the filing date once published.
The designs can block one who subsequently seeks to obtain design
patents on the same or obvious variants design.
Meanwhile, applicants should note that the earlier published designs in
the IDA than U.S. design patent application may give a potential competitor
somewhat earlier information about the applicants’ design.

As aforementioned, there is
many things that should be considered when using the Hague System to file an
IDA. These things can be considered in
both optimism and caution, depending what the applicant wants, and depending
how the applicant use the Hague System.

4.
Present and Future of Design Patent

The WIPO announced that, in 2014,
WIPO recorded 13,504 designs which are contained in international
registrations. This number represents a
5.5% increase on 2013 figures, and the third successive year of growth in the
number of designs.[20] According to the convenience and efficiency of
the Hague System, we can expect the Hague System to be a very popular
development for U.S. applicants, likewise the PCT system and the Madrid
Protocol.

As
shown in the above tables[21], the
top applicants who filed more than 40 IDAs also filed and acquired a large
number of U.S. design patents. If these
applicants are going to use the Hague System for processing their industrial
designs with the implementation of the Hague Agreement in the
United States, the number of U.S. design patent applications would be
significantly decreased. In the future,
Hague will bring a substantial impact on the U.S. design patent practice, and we
should expect and prepare that impact.

However,
U.S. patent practitioners can advise their clients to keep using the
traditional design patent system, rather than using the Hague system, based on
the fact that they are familiar with certain tendencies regarding how U.S.
courts interpret and enforce standard U.S. design patents. There is no case law and no experience
regarding how courts will interpret and enforce design patent registered
through the Hague System.

The Hague Agreement creates
opportunities for U.S. designers who want to get design patents internationally,
but it may reduce a size of the U.S. design patent
prosecution practices. The Hague System may be the
best choice in the case of a large international filing program, if overall
cost and subsequent ease of administration are the most important
considerations. On the other hand, Applicants
seeking more secure and predictable design patents may wish to consider using
the traditional U.S. design patent system, since we neither have case law nor
experiences how U.S. courts will handle the design patent
registered through the Hague System.

Therefore, the Hague System
is not a master plan for every applicant who want to get design patents
internationally. Whether or not to file an IDA under the Hague System should be
evaluated on a case-by-case basis with all due caution.